Ex Parte Beck et al

Patent Trial and Appeal Board

Mar 31, 2014

11200381 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/200,381 08/09/2005 Harold Kent Beck 1391-61600 3489
50401 7590 04/01/2014
HALLIBURTON ENERGY SERVICES, INC.
C/O Conley Rose, P.C.
5601 Granite Parkway, Suite 500
Plano, TX 75024
EXAMINER
ALHIJA, SAIF A
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
04/01/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte HAROLD KENT BECK, KENNETH L. SCHWENDEMANN,
DAVID R. LARIMORE, BRANDON B. BEAVER,
ALEXANDER G. KRASOVSKY, and DARRIN N. TOWERS

_____________

Appeal 2011-010271
Application 11/200,381
Technology Center 2100
______________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and
ANDREW J. DILLON, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010271
Application 11/200,381

2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3-21, and 25-28.1 We have jurisdiction under 35
U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method and system for developing a
downhole tool system. Spec. ¶ 20. Claim 1 is illustrative of the invention
and is reproduced below:

1. A method of downhole tool system development that
comprises:
receiving electronic specifications of a downhole tool
system that comprises multiple strings including an inner string
for placement within an outer string, each of the inner string
and the outer string having one or more components; and
checking the received specifications by a downhole tool
system development software stored in a memory and
executing on a processor for operation-induced interference
between the inner string and the outer string.

REFERENCES
Misselbrook US 6,497,290 B1 Dec. 24, 2002

Kent Beck & Ken Schwendeman, “Unique Simulation Development
Enhances Safer Operation for Downhole Well Test Tools,” SPE 35691,
Society of Petroleum Engineers, Inc., 1996.

1 Claims 2 and 22-24 were previously cancelled.
Appeal 2011-010271
Application 11/200,381

3
REJECTION AT ISSUE
Claims 1, 3-21, and 25-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Misselbrook in view of Beck. Ans. 2-9.

ISSUES2
Did the Examiner err in finding that the combination of Misselbrook
and Beck teaches or suggests “checking the received specifications by a
downhole tool system development software… for operation-induced
interference between the inner and the outer string,” as recited in
independent claim 1?
Did the Examiner err in finding that the combination of Misselbrook
and Beck teaches or suggests software that causes a processor to “test for
diametrical overlap between said tools attributable to relative motion of the
inner string within the outer string,” as recited in independent claim 15?

ANALYSIS
Claim 1
Claim 1 recites “checking the received specifications by a downhole
tool system development software stored in a memory and executing on a
processor for operation-induced interference between the inner string and the
outer string.” Claims 3-14 and 25-27 are dependent upon claim 1.
Appellants argue that none of the references, either alone or in combination,
teaches or suggests the disputed limitation. App. Br. 14-18, 20-21; Reply
Br. 4-5, 7-8. We agree.

2 Appellants make additional arguments with respect to claims 1, 3-21, and
25-28. App. Br. 14-28; Reply Br. 6-14. We will not address Appellants’
additional arguments as these issues are dispositive of the appeal.
Appeal 2011-010271
Application 11/200,381

4
The Examiner finds that Misselbrook teaches the checking step based
solely on the fact that the purpose of helixing the inner coil is to cause the
inner coil to make contact with the outer coil. Ans. 3, 9. While Misselbrook
does in fact teach the contact described above in the design and construction
of the device, we agree with Appellants (App. Br. 16; Reply Br. 4-5) that the
Examiner fails to show, nor do we find, how Misselbrook or Beck teaches or
suggests actually checking to see whether the contact occurs. Therefore, we
cannot sustain the Examiner’s rejection of claim 1.

Claim 15
Claim 15 recites “software causes the processor to . . . test for
diametrical overlap between said tools attributable to relative motion of the
inner string within the outer string.” Claims 16-21 and 28 are dependent
upon claim 15. Appellants argue that none of the references, either alone or
in combination, teaches or suggest the disputed limitation. App. Br. 25-26;
Reply Br. 12-14. We agree.
The Examiner uses the same finding indicated above with respect to
claim 1 as with claim 15. Ans. 6-7. Again, we agree with Appellants (App.
Br. 27-28) that the Examiner fails to show, nor do we find, how Misselbrook
or Beck teaches or suggests specifically testing for diametrical overlap, as
required by the claim. Therefore, we cannot sustain the Examiner’s
rejection of claim 15.

CONCLUSION
The Examiner erred in finding that the combination of Misselbrook
and Beck teaches or suggests “checking the received specifications by a
Appeal 2011-010271
Application 11/200,381

5
downhole tool system development software . . . for operation-induced
interference between the inner and the outer string,” as recited in
independent claim 1.
The Examiner erred in finding that the combination of Misselbrook
and Beck teaches or suggests software that causes a processor to “test for
diametrical overlap between said tools attributable to relative motion of the
inner string within the outer string,” as recited in independent claim 15.

DECISION
The Examiner’s decision to reject claims 1, 3-21, and 25-28 is
reversed.

REVERSED

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